[gnso-rpm-wg] Food for Thought: DMCA procedure at YouTube contrast with URS/UDRP

Mon Jan 8 19:49:26 UTC 2018

I very strongly suggest that this group invite the providers to come discuss the actual workings of the URS.  If you read the technical specs along with the URS itself (URS 10.3 - *Complainant* extends the registration for a year at *commercial rates* and URS Rule 14(b) which says a Complainant must discuss renewal with the registry directly), you will see that the TM owner needs to request the extension and pay for it.  This is not the first time people have made erroneous assumptions on this list about how they think URS works.  

PLEASE ASK THE PROVIDERS or a registrar or registry before assuming a registrar would be on the hook for a renewal fee if the complainant didn't pay.

Nevertheless, I note that in my past experience, there was a significant amount of good faith confusion by registry operators, registrars, and prevailing TM owners about how this renewal was to work, so I do recommend this group review the process as there is likely room for improvement.

Thanks,

Kristine

-----Original Message-----
From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of George Kirikos
Sent: Monday, January 08, 2018 8:05 AM
To: gnso-rpm-wg <gnso-rpm-wg at icann.org>
Subject: Re: [gnso-rpm-wg] Food for Thought: DMCA procedure at YouTube contrast with URS/UDRP

Hi Claudio,

Thanks for your reply. Yes, the current implementation of the URS appears to leave much to be desired.

I believe the intent was that the domain name would be suspended, and then go through the normal expiration cycle (which meant deletion after expiry). But, the actual implementation wasn't so clean.

I'm not sure that implementing immediate cancellation would make the TM holder better off (i.e. keeping the domain name out of circulation for a while, and not having to pay for the renewals themselves might be perferable, compared with a quicker deletion). A delayed cancellation process also is desirable for a good faith domain name registrant, to allow ample time for appeal (within the URS) and/or external review by the courts (outside the URS).

To show how "ugly" the current implementation is, consider this "bug"
(REGISTRARS pay attention!). In the "URS Technical Requirements"

https://newgtlds.icann.org/en/applicants/urs
https://newgtlds.icann.org/en/applicants/urs/tech-requirements-17oct13-en.pdf

one of the registrar requirements (page 5) is:

"Registrar Requirement 3: Registrar MUST offer the option for the URS Complainant to extend a URS Suspended domain name's registration for up to one additional year (if allowed by the maximum validity period of the TLD) in cases where the URS Complainant prevailed. Registrar MUST pay the renewal fee for such domain name to the Registry Operator."

Imagine a scenario where a registrar has domains that were registered for pennies. The registry later raises the renewal price to a very high amount (as we've seen some registries do), say $5 million (just for the sake of argument). Since the ***registrar*** MUST pay that renewal fee, they could be on the hook for some enormous payments to the registry!

If you want to imagine an even "crazier" scenario, suppose a registry operator registers those domains *themselves* (or via a related party or shell company), sets up some URS disputes against "themselves" (and loses), raises the renewal fees, and then compels the registrar to pay for that renewal! Rinse, and repeat.....

I think I've just discovered a new "innovative" business model for new gTLD registry operators! ;-)

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/

On Mon, Jan 8, 2018 at 10:26 AM, claudio di gangi <ipcdigangi at gmail.com> wrote:
> George, all,
>
> Thanks for this note.
>
> Just for clarification on the last point, as I understand the current 
> remedies available under the URS does not include cancellation of the 
> domain.
>
> As a result, upon expiry the suspended domain can be renewed and used 
> (including for abusive purposes) by the losing registrant of the URS 
> decision.
>
> To address this issue we can consider adding cancellation as a remedy 
> (or otherwise modifying the URS) to minimize the need for repeated, 
> serial enforcement against previously suspended domains.
>
> Best regards,
> Claudio
>
> On Mon, Jan 8, 2018 at 8:09 AM, George Kirikos <icann at leap.com> wrote:
>>
>> Hi Paul,
>>
>> Thanks for your thoughts. I agree that they are different. Just 
>> pointing out that there are other systems out there that don't have 
>> that role reversal feature.
>>
>> Also, I believe some folks had mused about the possibility of a 
>> single DRP that integrated the URS and UDRP. The issue of creation of 
>> a "Notice of Dispute", that preceded the actual dispute, also has 
>> arisen. If such a system also handled the high number of defaults 
>> differently than today, then one result might be a much lower cost 
>> procedure in the case of defaults (i.e. it could be very lightweight 
>> like the YouTube procedure), and then reference to the courts for the 
>> disputes when both sides show up and are heavily contesting the 
>> matter.
>>
>> In terms of integration, one way to look at the URS is that it's very 
>> similar to a UDRP where the Complainant (TM holder) asks only for 
>> cancellation, albeit that the URS cancellation happens with a delay 
>> (under the UDRP, the cancellation would happen almost immediately, 
>> after allowing for the appeal to the courts)
>>
>> Sincerely,
>>
>> George Kirikos
>> 416-588-0269
>> http://www.leap.com/
>>
>> On Mon, Jan 8, 2018 at 6:30 AM, Paul Keating <Paul at law.es> wrote:
>> > George,
>> >
>> > I know that a response has already been posted but I wanted to add 
>> > my quick thoughts.
>> >
>> > I agree that the DMCA and the UDRP/URS are not identical.  In fact 
>> > the roles remain reversed throughout the UDRP/URS process.  The 
>> > DMCA merely provides a notice, take-down followed by the 
>> > opportunity to revive the posting.  Once reposting occurs the issue 
>> > remains as it was before the notice - the copyright owner must 
>> > proceed with litigation.  The UDRP/URS however, results in the 
>> > domain being transferred/suspended or not.  In the case of 
>> > transfer, it is the registrant that must file.  In the case the 
>> > complaint is denied then the trademark owner has that burden (like 
>> > the copyright owner in the DMCA example).
>> >
>> > PRK
>> >
>> > On 1/6/18, 12:23 AM, "gnso-rpm-wg on behalf of George Kirikos"
>> > <gnso-rpm-wg-bounces at icann.org on behalf of icann at leap.com> wrote:
>> >
>> >>Hi folks,
>> >>
>> >>There was an interesting article published today about a copyright 
>> >>dispute involving "white noise" videos on YouTube:
>> >>
>>
>> >> >>https://gizmodo.com/man-s-youtube-video-of-white-noise-hit-with-
>> >> >>five-copyr
>> >>i-1821804093
>> >>
>> >>which linked to the dispute procedure that YouTube follows:
>> >>
>> >>https://support.google.com/youtube/answer/2797454
>> >>
>> >>Going through the various links, it was very interesting that they 
>> >>even have a "Copyright School", see:
>> >>
>> >>https://support.google.com/youtube/answer/2814000
>> >>
>> >>(expand the "How to resolve a copyright strike" to see the link to 
>> >>it), which is quite interesting, given how often the education 
>> >>aspect for registrants has come up in our PDP's work.
>> >>
>> >>Also of interest is the section on "Counter Notification Basics":
>> >>
>> >>https://support.google.com/youtube/answer/2807684
>> >>
>> >>where importantly it says:
>> >>
>> >>"After we process your counter notification by forwarding it to the 
>> >>claimant, the claimant has 10 business days to provide us with 
>> >>evidence that they have initiated a court action to keep the 
>> >>content down."
>> >>
>> >>and it's the content creator who posts the relevant jurisdiction:
>> >>
>> >>https://support.google.com/youtube/answer/6005919
>> >>
>> >>""I consent to the jurisdiction of the Federal District Court for 
>> >>the district in which my address is located, or if my address is 
>> >>outside of the United States, the judicial district in which 
>> >>YouTube is located, and will accept service of process from the claimant."
>> >>
>> >>As noted in prior threads, various issues arise under the URS (and
>> >>UDRP) when the natural role of plaintiffs vs. defendants (had the 
>> >>URS/UDRP not existed) gets reversed (e.g. the Yoyo.email UK "cause 
>> >>of action issue", as well as IGO and other groups' claimed 
>> >>"sovereign immunity").
>> >>
>> >>With the dispute resolution procedure followed by YouTube, instead 
>> >>the onus is on the copyright owner (the "claimant") to file the 
>> >>lawsuit, in the same natural way that would exist had that dispute 
>> >>resolution procedure not existed. Thus, none of the issues due to 
>> >>reversal of plaintiff/defendant arise.
>> >>
>> >>I thought it would be of interest, especially as it also might also 
>> >>give insights as to how "defaults" are handled.
>> >>
>> >>Food for thought.
>> >>
>> >>Sincerely,
>> >>
>> >>George Kirikos
>> >>416-588-0269
>> >>http://www.leap.com/
>> >>_______________________________________________
>> >>gnso-rpm-wg mailing list
>> >>gnso-rpm-wg at icann.org
>> >>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>> >
>> >
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>
>
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